`U.S. Patent No. 7,064,197
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`
`v.
`
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`
`Case IPR2017-00172
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`__________________
`
`
`
`ENZO’S RESPONSE TO PETITIONER’S MOTION FOR JOINDER
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2017-00172
`U.S. Patent No. 7,064,197
`
`
`
`Patent Owner Enzo Life Sciences, Inc. (“Enzo”) hereby responds to the
`
`motion for joinder Becton, Dickinson and Company (“BD” or “Petitioner”) filed
`
`with its Petition in Case IPR2017-00172. Petitioner’s motion for joinder seeks
`
`joinder of this proceeding with the related matter Case IPR2016-00820. Enzo
`
`conditionally opposes Petitioner’s motion for joinder in the following two respects.
`
`
`
`First, in Case IPR2016-00820, Enzo filed a request for rehearing of the
`
`Board’s decision to institute trial (Paper 11). Enzo requested that the Board
`
`reverse its decision to institute trial in its entirety. If Enzo’s request for rehearing
`
`is granted and institution is denied in Case IPR2016-00820, then Enzo would
`
`oppose Petitioner’s joinder motion for lack of an instituted proceeding to join.
`
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b).
`
`
`
`Second, a motion for joinder can only be granted if the Board determines
`
`that the Petition in this proceeding warrants institution of an inter partes review.
`
`35 U.S.C. § 315(c). Enzo’s preliminary response in this proceeding will include
`
`arguments Enzo did not include in its optional preliminary response in Case
`
`IPR2016-00820 in order to show that the Petition does not establish a reasonable
`
`likelihood of prevailing as to any claim, and thus does not warrant institution.
`
`35 U.S.C. § 315(c); 35 U.S.C. § 314(a).
`
`
`
`However, if the Board denies Enzo’s request for rehearing in Case IPR2016-
`
`00820, and if the Board determines after considering Enzo’s preliminary response
`
`1
`
`
`
`Case IPR2017-00172
`U.S. Patent No. 7,064,197
`
`that the Petition in this proceeding warrants institution, then Enzo would not
`
`oppose joining this proceeding with Case IPR2016-00820 under the conditions set
`
`forth in Petitioner’s motion for joinder.
`
`
`
`Dated: December 2, 2016
`
`
`
`
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
`
`2
`
`
`
`Case IPR2017-00172
`U.S. Patent No. 7,064,197
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on December
`
`2, 2016, a complete copy of the foregoing was served on counsel of record for the
`Petitioner by filing this document through PTAB E2E and by sending this
`document via electronic mail to the following addresses:
`
`Jamie T. Wisz (Reg. No. 58,429)
`Heather Petruzzi (Reg. No. 71,720)
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`1875 Pennsylvania Ave., NW
`Washington, DC, 20006
`Telephone: (202) 663-6286
`Facsimile: (202) 663-6363
`Jamie.Wisz@WilmerHale.com
`Heather.Petruzzi@WilmerHale.com
`
`Dated: December 2, 2016
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner Enzo
`Life Sciences, Inc.
`
`
`
`3
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